Federal Circuit Patent Updates - August 2009

Federal Circuit Patent Updates - August 2009


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Ariad Pharmaceuticals v. Eli Lilly (No. 2008-1248)(en banc)

August 21, 2009 8:46 AM  


(Per Curiam) Precedential Order vacating panel opinion and granting petition for rehearing en banc to consider whether 35 USC 112, para. 1 contains a written description requirement separate from an enablement requirement and, if so, what the scope and purpose of that requirement is.

A full version of the text is available here.


Sky Technologies, Llc. v. Sap Ag (No. 2008-1606)(Michel,Bryson, Spencer [of the E.D. Va., sitting by designation])

August 20, 2009 8:43 AM  


(Spencer) Affirming finding that plaintiff had standing to sue for infringement, having acquired rights in the patents via foreclosure on a security interest in accordance with state law.

A full version of the text is available here.


Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.(No. 2007-1296)(Newman, Lourie, Mayer, en banc in part)

August 19, 2009 8:23 AM  


(Lourie) Overruling prior law and holding that 35 USC 271(f) does not apply to method claims or permit recovery of damages on devices exported from the US where the claimed method was carried out in countries outside the US. Panel portion of opinion reverses summary judgment of invalidity in light of the Court's prior mandates but affirms judgment that infringement damages could only be recovered for devices that actually performed the patented method. Newman, concurs in part and dissents in part.

A full version of the text is available here.


Callaway Golf Co. v. Acushnet Co. (No. 2009-1076)(Linn, Dyk, Prost)

August 12, 2009 8:20 AM  


(Dyk) Reversing summary judgment of no anticipation, vacating judgment of nonobviousness because of inconsistent jury verdicts, and remanding for a new trial. Affirming exclusion of evidence of parallel reexamination proceedings: "[t]he non-final re-examination determinations were of little relevance to the jury's independent deliberations on the factual issues underlying the question of obviousness. In contrast, the risk of jury confusion if evidence of the non-final PTO proceedings were introduced was high."

A full version of the text is available here.


Wedgetail, Ltd. v. Huddleston Deluxe, Inc. (No. 2009-1045)(Schall, Gajarsa, Dyk)

August 12, 2009 8:14 AM  


(Gajarsa) Affirming district court's decision not to award attorney fees under 35 USC 285 against plaintiff who voluntarily dismissed its claims following claim construction.

A full version of the text is available here.


Hyatt v. Acting Director, Patent and Trademark Office(No. 2007-1066)(Michel, Dyk, Moore)

August 11, 2009 8:08 AM  


(Michel) Affirming district court's summary judgment in an action under 35 USC 145 sustaining PTO rejection of claims as not supported by adequate written description, and in excluding the applicant's evidence that was not submitted to the PTO, where the PTO notified the applicant of the duty to submit the evidence but the applicant willfully refused to participate in the examination process. Moore, dissents.

A full version of the text is available here.


Bayer Schering Pharma AG v. Barr Laboratories Inc.(2008-1282) (Newman, Friedman, Mayer)

August 5, 2009 11:07 AM  


(Mayer) Affirming judgment that patent directed to oral contraceptive is obvious.

A full version of the text is available here.


Exergen, Corp. v. Wal Mart Stores, Inc. (2006-1491, 2007-1180) (Michel, Linn, St. Eve [of the N.D. of Illinois, sitting by designation])

August 4, 2009 11:03 AM  


(Linn) Affirming denial of motion to add inequitable conduct as an affirmative defense. Also reversing jury findings that claims directed to infrared thermometers are not invalid and infringed. “[W]e hold that in pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.”

A ful version of the text is available here.


Touchcom, Inc. v. Bereskin & Parr (2008-1229)(Lourie, Gajarsa, Prost)

August 3, 2009 11:01 AM  


(Lourie) Reversing dismissal for lack of personal jurisdiction. Patentee used a Canadian intellectual property firm to obtain patents in Canada and the U.S. After a district court held the U.S. patent invalid for indefiniteness, the patentee sued his Canadian attorney for malpractice. “The question presented in this case is one of first impression, viz., whether the act of filing an application for a U.S. patent at the USPTO is sufficient to subject the filing attorney to personal jurisdiction in a malpractice claim that is based upon that filing and is brought in federal court. . . [W]e conclude that it is.” Prost dissented.

A full version of the text is available here.